David C. Koogle et al.

Patent Trials and Appeals Board

Oct 2, 2019

14091902 - (D) (P.T.A.B. Oct. 2, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/091,902 11/27/2013 David C. KOOGLE JR. 67145-201 PUS1 4133
26096 7590 10/02/2019
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
SIPP, AMY R.
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
10/02/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID C. KOOGLE JR.,
ZACHARY A. INGWER, and MICHAEL E. EGGERT
___________

Appeal 2018-007425
Application 14/091,902
Technology Center 3700
____________

Before MICHAEL J. FITZPATRICK, ANNETTE R. REIMERS, and
LEE L. STEPINA, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject under 35 U.S.C. § 103(a): (1) claims 1–3, 5, 7, 9, 21, 22,
25, 28, 29, and 32 as unpatentable over Fischer (US 4,992,010, issued Feb.
12, 1991) and Melkent (US 2005/0277971 A1, published Dec. 15, 2005); (2)
claims 23, 24, 30, and 31 as unpatentable over Fischer, Melkent, and
Cogsdill (US 3,195,378, issued July 20, 1965); and (3) claims 12–15 and 27

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Arthrex, Inc. Appeal
Brief 3 (“Appeal Br.”), filed Apr. 9, 2018.
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as unpatentable over Melkent and Cogsdill. Claims 4 and 10 have been
withdrawn from consideration. Claims 6, 8, 11, 16–20, and 26 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER

The claimed subject matter “relates to an orthopedic surgical device,
and more particularly to an expandable reamer that can be introduced into a
bone tunnel to remove areas of diseased bone.” Spec. ¶ 2, Figs. 1A, 1B.
Claims 1, 12, and 28 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A surgical device, comprising:
a tube;
a cutting blade movable between a first position in
which said cutting blade is concealed inside said tube and
a second position in which said cutting blade is exposed
through a sidewall of said tube;
a clutch assembly configured to rotate to move said
cutting blade between said first position and said second
position; and
a deflection pin configured to deflect said cutting
blade radially outward of said tube as a tapered edge of
said cutting blade is moved into contact with said
deflection pin.

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ANALYSIS

Obviousness over Fischer and Melkent

Claims 1–3, 5, 7, 21, 22, 28, 29, and 32

Independent claim 1 is directed to a surgical device including “a
clutch assembly configured to rotate to move said cutting blade between said
first position and said second position.” Appeal Br.19 (Claims App.). The
Examiner finds that Fischer discloses the surgical device of claim 1
substantially as claimed except that “Fischer is silent to a clutch assembly
configured to rotate to move said cutting blade between said first position
and said second position.” Final Act. 6–8.2
The Examiner finds that Melkent discloses the claimed “clutch
assembly” and reasons that it would have been obvious to modify the
operator end of the tube and shaft of Fischer by “adding a clutch assembly as
taught by Melkent in order to enable deployment of the cutting blade at
various heights (Melkent ¶s 24 and 36) to enable the user to create a space of
a certain height or remove material by incrementally increasing size using
successive cutting (Melkent ¶46).” Final Act. 8–9.
As to the Examiner’s above-cited reasoning to combine Fischer and
Melkent, Appellant contends that “it is never explained how the proposed
modification would facilitate these advantages any more than the drilling
device of Fischer already does.” Appeal Br. 10. According to Appellant,
“[t]he Examiner appears to be proposing adding completely redundant
functionality to Fischer” as “reaming element 2 of Fischer is already capable
of incremental advancement by controlling the amount of force F applied to

2 Final Office Action (“Final Act.”), dated Oct. 10, 2017.
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the stem 1.” Id.; see also Reply Br. 43 (“Fischer does describe such a
mechanism - the combination of the force applied by the operator and the
compression spring allows a controlled amount of force to be applied.”)
(citing Fischer 2:12–22, 3:3–21).
Appellant has the better position here. Fischer discloses that
compression spring 5 surrounds guide tube 3 in the upper region and is held
between support bearing 4 constructed on stem 1 and support bearing 6
arranged on guide tube 3. See Fischer 2:19–22. Fischer also discloses:
The device illustrated in FIG. 1 consists of a stem 1 with a
reaming element 2. The stem extends in a guide tube 3 having
an attached ring 4, which is engaged by a compression spring 5
shown in a simplified form. At the other end of the compression
spring 5, a transverse pin 6 forms a support for the compression
spring 5. The transverse pin 6 is guided in a slot 7 in the guide
tube 3 and in FIG. 1, it is shown as being located in an upper end
position.

Fischer 2:41–49 (emphases added), Fig. 1.
Fischer further discloses that, “[i]n FIG. 2, the stem 1 is pressed
downwards with a force F, so that the reaming element 2 reams out an
undercut 13 at the bottom of a drilled hole 14” (Fischer 3:3–5; see also id. at
1:29–35;4 Fig. 2), such that “several undercuts can be successively
produced” (Fischer 1:48–49). In addition, Figure 1 of Fischer illustrates
compression spring 5 uncompressed and Figure 2 of Fischer illustrates

3 Reply Brief (“Reply Br.”), filed July 12, 2018.
4 The Examiner notes that “Fischer does disclose that axial pressure on an end
(8) of a shaft (1) pivots the cutting blade radially outwards (col. 1 lines 30-
32).” Final Act. 8.
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compression spring 5 fully compressed by force F. Fischer 2:41–44; see
also id. at 3:14–15; Figs. 1, 2.
As an initial matter, in the Final Office Action and the Answer, the
Examiner notes that “Fischer is capable of being operated [incrementally] if
a controlled amount of uniform force is applied and sustained during
rotational cutting.” Final Act. 4; see also Ans. 5.5 Based on Fischer’s
disclosure and Figures, it stands to reason that compression spring 5 can be
incrementally advanced via transverse pin 6 in guide slot 7 depending on the
amount of force F applied by the operator to stem 1, such that several
undercuts 13 can be successively produced at various heights by reaming
element 2. See Appeal Br. 10; see also Reply Br. 4. In the Answer, the
Examiner states that “Melkent teaches providing a structure [i.e., a clutch
assembly] that makes it practical for a user to set a known blade position to
achieve a uniform undercut of a specific diameter by making successive
cuts.” Ans. 5; see also Final Act. 9. However, as discussed above, Fischer
already discloses the ability to achieve such undercuts by making
“successive cuts.” Fischer 1:48–49. For these reasons, the Examiner’s
proposed reasoning to combine the teachings of Fischer and Melkent lacks
rational underpinnings.
Similar to independent claim 1, independent claim 28 is directed to a
surgical device having a clutch assembly. See Appeal Br. 19 (Claims App.).
The Examiner relies on the same inadequate reasoning to combine the
teachings of Fischer and Melkent discussed above. See Final Act. 11.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 28, or that of claims 3, 5, 7, 9, 21, 22, 25, 29, and

5 Examiner’ Answer (“Ans.”), dated May 17, 2018.
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32, all of which depend from either claim 1 or claim 28, as unpatentable
over Fischer and Melkent.

Obviousness over Fischer, Melkent, and Cogsdill

Claims 23, 24, 30, and 31

Each of claims 23, 24, 30, and 31 depends ultimately from either
claim 1 or claim 28. See Appeal Br. 20–22 (Claims App.). The Examiner
relies on the same inadequate reasoning to combine the teachings of Fischer
and Melkent discussed above for claims 1 and 28 (prior to further combining
with the teachings of Cogsdill). See Final Act. 13. Thus, for reasons similar
to those discussed above for claims 1 and 28, we do not sustain the
Examiner’s rejection of claims 23, 24, 30, and 31 as unpatentable over
Fischer, Melkent, and Cogsdill.

Obviousness over Melkent and Cogsdill

Claims 12–15 and 27

Independent claim 12 is directed to an expandable reamer including at
least one cutting blade and a clutch assembly having a clutch hub and a
threaded hub, wherein teeth of one of the threaded hub and the clutch hub
are removably received within recesses of the other of the threaded hub and
the clutch hub, and wherein a distance between the teeth corresponds to a
specific radially outward incremental advancement of the at least one cutting
blade. Appeal Br. 20 (Claims App.). The Examiner finds that Melkent
discloses the expandable reamer of claim 12 substantially as claimed except:
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Melkent is silent to teeth of one of said threaded hub and said
clutch hub being removably received within recesses of the other
of said threaded hub and said clutch hub, and wherein a distance
between said teeth corresponds to a specific radially outward
incremental advancement of said at least one cutting blade.

Final Act. 16. The Examiner finds that Cogsdill discloses an expandable
reamer with a clutch assembly having “a clutch hub (126) and a threaded
hub (128, 134, 112, 164), wherein teeth (168) of one of said threaded hub
and said clutch hub are removably received within recesses . . . of the other
of said threaded hub and said clutch hub,” and “wherein a distance between
said teeth corresponds to a specific radially outward incremental
advancement of said at least one cutting blade.” Id. (citing Cogsdill 5:48–
51, 63–67, Fig. 9). The Examiner reasons that it would have been obvious
to modify the threaded hub and clutch hub of Melkent by adding
teeth/recesses to the threaded hub and adding the spring and collar with teeth
as taught by Cogsdill
in order to selectively prevent rotation (Cogsdill col. 5 lines 50-
52) between the hubs while preserving the ability to vary the
depth of the cutting edge (Cogsdill col. 5 lines 54-55)” and
additionally providing a predetermined number of teeth that
correlate with an indication in the change in depth of the cutting
edge (Cogsdill col. 5 lines 63-67) to create a space of a certain
height/size (Melkent ¶46), i.e. to provide a lock for fixing the
cutting blades in a position prior to cutting such that a space is
created of the desired size.

Final Act. 17.
Appellant contends that Cogsdill fails to disclose “wherein a distance
between the teeth corresponds to a specific radially outward incremental
advancement of the at least one cutting blade,” as required by claim 12. See
Appeal Br. 15–16; see also id. at 20 (Claims App.). In particular, Appellant
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contends that the passage of Cogsdill cited by the Examiner for this
limitation (i.e., Cogsdill 5:63–67) discloses that “the change in cutting depth
is indicated by the total number of teeth and a correlation of that number of
teeth with the tapered surface 154” and that “[t]he change in depth . . . has
nothing to do with ‘a distance between said teeth.’” Appeal Br. 16; see also
Final Act. 16.
Cogsdill discloses that “a predetermined number of teeth 168 may be
provided and correlated with the tapered surface 154 to provide an indication
of the change in depth of cut of the cutting edge 158.” Cogsdill 5:63–66.
We agree with Appellant that this passage of Cogsdill indicates that a
predetermined number of teeth 168 is correlated with tapered surface 154 of
shank 112 “to provide an indication of the change of depth” of the cut of
cutting edge 158 of cutting blade 120.” See id.; see also Appeal Br. 16
(emphasis added); Ans. 14 (The Examiner notes that “the number of teeth is
specifically disclosed to correlate with the change in depth of the cut of the
cutting edge.”).
Here, the Examiner fails to provide sufficient evidence or technical
reasoning to establish that a “change in depth” of the cut of cutting edge 158
of Cogsdill is correlated to the “distance between teeth” 168, so as to also
“correspond[] to a specific radially outward incremental advancement” of
cutting blade 120. See Final Act. 16; see also Ans. 14; Appeal Br. 16, 20
(Claims App.). The Examiner states that “the distance between the teeth is .
. . predetermined as shown in Fig. 9.” Ans. 14. However, the Examiner
does not direct us to any discussion in Cogsdill that the Figures are drawn to
scale and “it is well established that patent drawings do not define the
precise proportions of the elements and may not be relied on to show
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particular sizes if the specification is completely silent on the issue.”
Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed.
Cir. 2000). For these reasons, the Examiner fails to establish by a
preponderance of the evidence that Cogsdill discloses that a distance
between teeth 168 corresponds to a specific radially outward incremental
advancement of cutting blade 120.
Additionally, we agree with Appellant that the Examiner’s reasoning
to combine Melkent and Cogsdill (i.e., “to create a space of a certain
height/size (Melkent ¶46), . . . to provide a lock for fixing the cutting blades
in a position prior to cutting such that a space is created of the desired size”)
lacks rational underpinnings. See Appeal Br. 16–17; see also Final Act. 16–
17; Ans. 15–16.
Melkent discloses:
The embodiment in FIG. 12 is further provided with indicia to
indicate the height between the cutting blades 27, 29 of cutting
members 26, 28 at various stages of deployment of cutting
members 26, 28 from mounting portion 13. . . . The height
marking[s] 170 provide an indication of the deployed height
between cutting blades 27, 29 of cutting members 26, 28. This
can facilitate the use of instrument 10 during surgery. For
example, it may be desired to create a space between vertebrae
of a certain height, or it may be desired to remove bony material
with cutting members 26, 28 by incrementally increasing the
height between cutting blades 27, 29 after successive passes of
cutting blades 27, 29 along the bony tissue.

Melkent ¶ 46 (emphases added).
As correctly pointed out by Appellant, based on the above-cited
paragraph, Melkent already provides the ability to fix cutting blades 27, 29
in a position prior to cutting such that a space of desired size/height is
created. Appeal Br. 17; see also Reply Br. 5. The Examiner does not
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provide any findings that Melkent recognized a problem with the height
adjustment assembly. See Final Act. 15–17; see also Ans. 15–16.
Moreover, given that Melkent already provides the ability to fix cutting
blades 27, 29 in a position prior to cutting such that a space of desired
size/height is created, we fail to see, and the Examiner fails to adequately
explain, how providing a lock to Melkent’s device would improve its ability
to fix cutting blades 27, 29 in a position prior to cutting such that a space of
desired size/height is created. See Final Act. 15–17; see also Ans. 15–16.
Absent reasoning that is supported by a rational underpinning for modifying
the reference as proposed, the Examiner’s rejection appears to be the result
of an impermissible hindsight analysis. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007) (citation omitted)) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.”); see also Reply Br. 5.
Accordingly, we do not sustain the Examiner’s rejection of claims 12–
15 and 27 as unpatentable over Melkent and Cogsdill.

DECISION
We REVERSE the decision of the Examiner to reject claims 1–3, 5, 7,
9, 12–15, 21–25, and 27–32.

REVERSED